Archive for the ‘Green Patents’ category

A123 Asks Appeals Court to Reinstate Home Court Advantage in Battery Patent Suit

November 20th, 2009


In April 2006 A123 Systems Inc. (A123), a Boston area lithium ion battery maker, brought a declaratory judgment action against Canadian utility Hydro-Quebec (H-Q) in federal court in Boston seeking declarations that A123 did not infringe U.S. Patent Nos. 5,910,382 (‘382 Patent) and 6,514,640 (‘640 Patent) and that the patents are invalid.  H-Q is the exclusive licensee of the ‘382 and ‘640 Patents.

The ‘382 and ‘640 Patents are entitled “Cathode materials for secondary (rechargeable) lithium batteries” and relate to host materials for use as electrodes in lithium ion batteries.  The patented materials provide a larger free volume for lithium ion motion that allows higher conductivity and therefore greater power densities.

In September 2006 A123 requested a stay of the Boston case pending the resolution of re-examination of the two patents in the U.S. Patent and Trademark Office (PTO).  The court dismissed the case without prejudice so the parties could subsequently move to reinstate it.

Also in September 2006, H-Q and the University of Texas (UT), which owns the ‘382 and ‘640 Patents, sued A123 for infringement of the patents in federal court in Texas.

This spring, after the PTO completed its re-examination of both patents, A123 asked the court in Boston to reopen its DJ action.  A123 argued that the Boston case should take precedence over the pending Texas action because it was the earlier filed case.

However, in a recent memorandum opinion (a123_memorandum.pdf) Judge Tauro of the U.S. District Court for the District of Massachusetts ruled that the Boston action could not be reinstated because A123 had failed to join the University of Texas.

Judge Tauro held that UT was a necessary party as the owner of the patents-in-suit because UT had not transferred all substantial rights in the patents to H-Q (the H-Q license contained some field of use restrictions).

Not only was UT not joined by A123, but UT could not be joined as a defendant in the Boston suit, the memorandum opinion held, because it is immune from suit.  Under the Eleventh Amendment, a federal court cannot hear a suit against a state without the state’s consent.

Last month A123 appealed (a123_notice_of_appeal.pdf) Judge Tauro’s order denying the motion to reopen the case (a123_order.pdf) to the Court of Appeals for the Federal Circuit (the appellate court that hears all patent appeals).

At least prior to A123’s appeal and Judge Tauro’s order, the Cleantech Litigation blog reported that the parties were trying to settle the suit. 

Akeena DJ and Infringement Action Aims to Ease Mounting Tension

November 12th, 2009


Akeena Solar is a Los Gatos, California solar installer and the owner of U.S. Patent No. 7,406,800 (‘800 Patent”), entitled “Mounting system for a solar panel” and directed to an integrated module frame and racking system for solar panels.

The ‘800 Patent describes a mounting system for a solar panel (100).  FIG. 2 shows three modules (102A-102C) coupled together to form an integrated system.  A splice (104e) mechanically connects one module to another and provides the electrical grounding connection between the solar modules.


In the example shown in FIG. 2B, an east-west splice (104) connects modules (102A and 102B).  The splice (104) is a tapered conductive metal to provide the grounding between modules and is grooved for easy screw insertion.  The splice (104) precisely aligns the modules and allows for compression of connector sockets to complete the electrical connection between adjacent modules.


According to the ‘800 Patent, the splice (104) provides several useful features, including mechanical rigidity between modules, an alignment method between modules and a grounding path that eliminates the need to run a grounding wire between the modules.

Last month, Akeena sued Zep Solar, Inc. (Zep), groSolar and High Sun Technology, Inc. (HST) in the Northern District of California. 

The complaint (akeena_complaint.pdf) contains two counts.  The first is against groSolar and HST for infringement of the ‘800 Patent.  According to the complaint, Zep’s solar panel mounting system infringes the ‘800 Patent, and groSolar has teamed up with Zep to distribute and install Zep systems.

The second claim is against Zep and HST for a declaratory judgment that Akeena does not infringe Zep’s U.S. Patent No. 7,592,537 (‘537 Patent), entitled “Method and apparatus for mounting photovoltaic modules.” 

The complaint bases DJ jurisdiction on a couple of e-mails between the parties.  Specifically, the complaint alleges that Zep sent an e-mail to Akeena’s counsel to bring the ‘537 Patent to its attention, and Zep’s CEO sent an e-mail to Akeena’s president regarding the ‘537 Patent and stating that “Zep’s legal team is ready for a fight if that is what is needed.”

Though solar installers don’t invest as heavily in IP as other players in the solar sector, it is an increasingly crowded field that may see more patent suits like this one in the future.

Biofilm, Bugs and Bioreactors: The IP Behind Coskata’s New Biofuel Facility

November 8th, 2009


In a previous post, I wrote about Coskata’s patent-pending ethanol production process.  The Illinois-based cellulosic ethanol company’s proprietary technology makes ethanol from various feedstocks by converting it to synthesis gas, or syngas, and then fermenting the gas using anaerobic microorganisms.

Coskata owns Patent Application Publication Nos. 2008/0305539 and 2008/0305540, directed to a membrane supported bioreactor system for converting syngas to biofuels (collectively “Bioreactor Applications”). 

According to the Bioreactor Applications, the disclosed processes boost efficiency by using one side of a membrane as the syngas contact surface and the opposite side as the surface for growing the microorganisms.  The gas is fed onto the contact side and transported through the membrane to a biofilm of anaerobic microorganisms, where it is fermented into biofuels.

Last month, Coskata opened a semi-commercial ethanol facility in Madison, Pennsylvania that makes ethanol using the company’s microorganisms and bioreactor technology.  According to the company’s press release, the flex facility will produce ethanol from numerous feedstocks, including wood biomass, agricultural waste, sustainable energy crops and construction waste.

To build the facility, Coskata teamed up with Westinghouse Plasma Corporation, which suppled the gasification technology for the project.

I had the opportunity to speak to Wes Bolsen, Coskata’s CMO, about the new facility, the company’s technology and the company’s IP.  He confirmed that the Pennsylvania facility uses Coskata’s patent-pending bioreactor technology.

Bolsen also told me that Coskata has patents directed to microorganisms used in the fermentation process, but that the company favors trade secret protection for some of the newer strains of “bugs,” including some of those used in the new facility.

According to Bolsen, Coskata “will continue with patents, trade secrets and whatever combination of the two” the company needs.  “Our IP is the core of this business,” he said.  “Our IP and innovation is what keeps us ahead in the industry.”

GreenShift-ing Focus to Pre-Grant Damages in Ethanol Processing Patent Suit

November 5th, 2009


GS CleanTech Corporation (GS), a wholly owned subsidiary of GreenShift Corporation, is a New York company that develops technology relating to energy efficient ethanol production processes.

GS owns U.S. Patent No. 7,601,858 (‘858 Patent), entitled “Method of processing ethanol byproducts and related subsystems” and directed to methods of recovering oil from byproducts of ethanol production.

Dry milling is a popular method of producing ethanol by fermentation of the starch in corn or other grains.  However, this method creates a waste stream comprised of byproducts called whole stillage.

According to the ‘858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GS’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

The ‘858 Patent issued on October 13, 2009.  The same day, GS filed suit in federal court in Manhattan accusing New Jersey-based separator and decanter maker GEA Westfalia Separator, Inc. (Westfalia) and multiple as yet unnamed defendants of contributory infringement and inducing infringement of the ‘858 Patent. 

According to the complaint (greenshift-complaint.pdf), Westfalia sells centrifuges for corn oil extraction and directs its customers to use the methods taught in the ‘858 Patent.

Because the suit was filed upon patent issuance, GS’s recoverable damages are quite limited.  So GS is claiming provisional patent rights under Section 154(d) of the patent statute, which allows recovery of a reasonable royalty if the infringer had actual notice of the published patent application and the claims of the issued patent are substantially identical to the originally published claims.

This strategy demonstrates the importance of promptly notifying any potential infringers as soon as your patent application publishes, which is 18 months after filing in the U.S.

Thanks again to the Cleantech Litigation blog for the head’s up about this case.

KIPO Announces Super Speedy Green Patent App Exam

November 1st, 2009


The Korean Intellectual Property Office (KIPO) recently announced that green patent applications are now eligible for “super speed” examination that provides examination results in just one month.

The special examination procedure applies to patent applications directed to several categories of technologies relating to the environment or “low-carbon green growth.”

To qualify for the super speedy examination, green patent applicants must request that a prior art search be conducted by one of the three search agencies officially sanctioned by KIPO.

According to the KIPO press release (see 10/20/09 item), the super speed system was to start on October 1 and will cut the already quick Korean timeline “from application to acquire a patent” from an average of 18 months (or three months for preferential examinations) to a stunningly short period:

Using the superspeed examination system . . . the period can be slashed to less than a month, the fastest examination period in the world.

Thanks to Stu Soffer for bringing this news to my attention. 

Excluded Icon? ITC Opens Investigation Into Imported Toyota Hybrids

October 30th, 2009


In a previous post, I discussed the complaint filed by hybrid drivetrain technology company Paice LLC (Paice) against Toyota in the U.S. International Trade Commission (ITC). 

In the complaint (paice_itc_complaint.pdf), Paice alleged that Toyota’s importation of the third generation Prius, the Camry Hybrid, the Lexus HS250h and RX450h (Accused Products) infringe U.S. Patent No. 5,343,970 (‘970 Patent).

Earlier this month the ITC issued a Notice of Investigation announcing its decision to conduct an investigation into Paice’s allegations.

In a prior case in the Eastern District of Texas Paice won a jury verdict that the second generation Prius, the Highlander and the Lexus RX 400h infringed two claims of the ‘970 Patent under the doctrine of equivalents, and the verdict was affirmed on appeal (see my previous post about the verdict and appeal here). 

The court awarded Paice an ongoing royalty of $25 per infringing vehicle, which was later increased to $98.

In this ITC action, Paice asserts that Toyota is precluded from challenging the infringement, validity and enforceability of the ‘970 Patent because those issues were previously adjudicated. 

Paice also contends that the Accused Products infringe the ‘970 Patent because of alleged judicial admissions by Toyota that the drivetrains of the Accused Products are materially the same as those that were found to infringe the ‘970 Patent.

According to Paice, that leaves only issues relating to “domestic industry,” i.e., whether Paice has significantly invested in the patented technology in the U.S.  

This issue could be dispositive here.  Although licensing activity can suffice for domestic industry, it remains to be seen whether Paice’s court-imposed royalty arrangement with Toyota will be enough to meet this requirement.

Aquamarine Power Harnesses Wave Energy with its Oscillating Oyster

October 22nd, 2009


Aquamarine Power is a Scottish wave energy developer that recently completed a first round of fundraising (10 million British pounds) and deployed a full scale demonstration model of its Oyster wave energy converter.

International Application No. PCT/GB2006/000906 and the corresponding U.S. Patent Application Pub. No. 2008/0191485 (‘485 Application) describe the Oyster.

The ‘485 Application is directed to a wave energy conversion device (1) comprising a base portion (2) anchored to the seabed (4).  A flap (8) is pivotally connected to the base portion (2) and moves back and forth in an oscillating motion in response to waves (7).


Deflector plates (13, 70) direct waves onto the flap (8), thereby improving power capture.  According to the ‘485 Application, curved end sections (78) also improve power capture. 


When the flap (8) oscillates in response to wave action, driving rods (66) cause hydraulic fluid in cylinders (68) to be pressurized by the action of pistons (not shown).  The pressurized fluid is delivered to on onshore turbine that generates electricity.

According to this Matter Network story Aquamarine Power has an agreement with Scottish and Southern Energy to develop up to 1,000 megwatts of marine energy sites by 2020 using the Oyster technology.

Green Patent Power: Griffith Hack Report Analyzes Hybrid Car Patents

October 18th, 2009

The Griffith Hack law firm in Australia recently published a report that analyzes hybrid car patent filings and how those filings affect innovation and success in the hybrid car market.

The report, entitled “Who holds the power? Lessons from hybrid car innovation for clean technologies”, was written by Justin Blows and Mike Lloyd, both members of the firm’s Clean & Sustainable Technologies Group.

Dr. Blows and his colleague used patent analytics tools to compile a list of all hybrid car patents filed internationally since 1980, group those patents into families, and rate the quality or “dominance” of those patents. 

Their analysis found that Toyota is the world leader in hybrid car patent families with 43% of the total, or more than 4,000 families. 

Interestingly, the study also found that a small U.S. hybrid drivetrain developer called Paice, which has been aggressively litigating its patents against Toyota with some success, holds four of the ten most dominant patents.

The implications of Toyota’s patent dominance is discussed at length in the report.  Dr. Blows’s blog post summarizes as follows:

the market leader in hybrid technology has filed so many patents ahead of its rivals, that other major manufacturers are now being forced to use the technology ‘under license’ or develop very different types of vehicles

According to the report, there is an apparent correlation between the number of hybrid cars sold by Toyota and the number of patents filed.

Moreover, and perhaps most important, the report posits that Toyota’s agressive patent filings have helped the automaker build its hybrid brand and set “the standard for the hybrid power train” by creating early and lasting exclusivity in its vehicles’ dual-mode capability, i.e., the ability to drive using one or both of an electric motor and a conventional motor.

More broadly, in his comments about the report, Dr. Blows echoes Green Patent Blog’s raison d’etre:

“Our report shows that clean technology innovators are massively investing in IP, to ensure they remain competitive as the world moves into a new age of clean technology.”

Sony Ericsson Settles ITC Patent Suit with LED Professor

October 15th, 2009


I’ve written before in this space about retired Columbia University Professor and LED innovator Gertrude Neumark Rothschild and her success litigating and licensing her patents (see, e.g., previous post here).  That success continues as four more defendants targeted by Rothschild in the U.S. International Trade Commission (ITC) settled recently.

The biggest name is Sony Ericsson Mobile Communications (Sony), whose settlement with Rothschild was given final approval by the ITC in August when the commission decided not to review an administrative law judge’s (ALJ) inital determination terminating the investigation with respect to Sony.

Also, in an initial determination (ID) made public last month, an ALJ granted motions by Tyntek Corp., Tekcore Corp. and Arima Optoelectronics seeking orders terminating the ITC investigations into their allegedly infringing products (Tyntek ID, Tekcore ID, Arima ID).

The settlements come in two consolidated ITC actions in which Rothschild alleged that about three dozen LED and consumer electronics makers infringe U.S. Patent No. 5,252,499 (‘499 patent), which relates to methods of making LEDs capable of emitting shorter wavelength light (see previous posts on these actions here and here).

The ‘499 patent is directed to methods of doping semiconductors, which means adding impurities to increase the number of free charge carriers.  Rothschild’s patented technology has had a major impact on LEDs by making production of green, blue and other short wavelength LEDs more economically viable. 

P3 and Smartlabs Settle Plug-in Energy Meter Patent Suit

October 11th, 2009


In a previous post, I discussed a patent suit between P3 International (P3), a New York consumer electronics company, and SmartLabs Inc. (SmartLabs), UPM Marketing Inc.  and UPM Technology USA, inc. (collectively “UPM”). 

In that case, P3 alleged that UPM’s plug-in energy meters infringe U.S. Patent No. 6,095,850 (‘850 patent).

P3 makes the Kill A Watt electric power meter, which allows consumers to determine how much energy particular appliances are using.   

P3 is the exclusive licensee of the ‘850 patent, which covers the Kill A Watt meter.  The ‘850 patent is directed to an electric adapter (1) having a plug (2) on its rear side which can be plugged into an electric socket (7). 


The adaptor has an outlet socket with three holes (3a, 3b, 3c) on the front and a display (4) to show electrical parameters of the appliance being monitored.

The parties recently filed a stipulation to dismiss the lawsuit, and Judge Denise L. Cote signed the stipulation (p3_stipulation.pdf) last month.  

The parties had previously agreed to narrow the issues in the case to only validity and enforceability of the ‘850 patent.  This efficient approach apparently led to early resolution of the dispute.